Inventors Insider: 7 Things to Do Before Filing a Patent
Today, we spoke with Andrea Hence Evans, a former patent examiner and trademark examining attorney at theUnited States Patent and Trademark Office (USPTO). She started The Law Firm of Andrea Hence Evans five years later because she wanted to help independent inventors who often didn't fully understand the patent process. Here are her seven tips for an inventor looking to patent a product.
Do you have an idea for an invention but don't know where to begin? Well, return here every Thursday for the Inventors Insider, where we will help you through the stages of invention; from creation to monetizing to marketing. BlackEnterprise.com will talk to experts, seasoned inventors, attorneys, and scientists to give you the news, advice, and timely information you need to protect your intellectual property and bring your ideas to life.more
Today, we spoke with Andrea Hence Evans, a former patent examiner and trademark examining attorney at theUnited States Patent and Trademark Office (USPTO). She started The Law Firm of Andrea Hence Evans five years later because she wanted to help independent inventors who often didn't fully understand the patent process. Here are her seven tips for an inventor looking to patent a product.more
1) Determine if you have something that is patentable by doing your own research. Search USPTO.gov, Google.com/patents, or any other online resource to find out if there is something like your invention already out there. To be patentable you need to have an invention that is considered novel—that means new--and non-obvious. The standard for obviousness is whether your invention would occur or be obvious to a person of ordinary skill in your industry. “If you see the identical invention out there, you can stop there,†says Evans. “There is no point in filing for a patent if you don’t have something that is patentable.â€more
2) Hire a patent attorney to conduct a novelty search. After you’ve researched whether or not your product is patentable, there is still more research to be done. “Just because you don’t see it on the market doesn’t mean that somebody hasn’t already patented it,†says Evans. Patents can be expensive and time consuming. It can take 18 months to more than two years before you hear back from the patent office. A patent firm can do a more thorough search of the patent office than you can do on your own. “A lot of times, people do their own searches but don’t know how to interpret the obvious standard.†There are certain things attorneys know that are obvious, she says. In addition, a patent attorney can use the same database as the patent examiner and search foreign references to patents, published applications, patents, and abandoned patents. A search by a patent attorney can range anywhere from $500 to $2,000. There are also companies that offer extremely low rates for online searches.more
3) Develop your idea so you are able to describe how it works and how it will be used. You don’t necessarily have to have a prototype made to file for a patent, but you need more than an idea,†says Evans. “You have to be able to describe it so that someone will be able to make or use your invention.†Will you build a device? Is it a new software concept? How will it work? What specific components do you plan to incorporate? What specific programming language or raw materials will you need? What actions will a user need to take to make your invention work?more
4) Keep an invention log. Aninvention log is a bound book with paper that cannot be removed or inserted. It is like a diary where you date and document everything you do in regard to creating your invention. You don’t want a binder where you can insert a sheet of paper and manipulate the sequence of events by changing dates. U.S. law does not acknowledge the first to file a patent, but the first to invent. That means that if one person files a patent today for an invention, but over the past year another individual has been conducting research for the same invention, the researcher without the patent pending can show their invention log and prove that they invented the product first.more
5) Be aware of your timeline. Once you make a public disclosure, you only have one year to file your patent application or the U.S. government will consider you to have given it away to the public. A public disclosure can be making an offer to sell your invention or talking about your invention at a public conference. When you are in the lab doing experimental research, the clock is off. But once you make your invention public by blog, at a trade show, or even on a plane in casual conversation, the clock has started. “Often people come to me when it is too late. They say, 'Here is a copy of the presentation I did two years ago.' Ok, well now you’ve given it away to the public,†says Evans. The good news is that since it was your idea to begin with (and you kept an invention log), no one else can patent your invention. The bad news is, now that it's public information, you can't patent it either.more
6) Understand the difference between a non-provisional and a provisional patent application. Both of them get you patent-pending status, but a provisional application holds your place in line to give you a filing date and no claims are required. It has a summary of your invention and is not examined by a patent office official. The non-provisional application gives you patent pending status but it will be examined by a patent office official and can actually turn into a patent. A non-provisional patent application is also more expensive than a provisional one. If you don’t have a lot of money, submit a provisional application and convert it later. But you only have one year to convert it to a non-provisional application.more
7) Hire a patent attorney. A patent attorney doesn’t help you create your invention. “Our job is to actually file the patent application and obtain patents that are valuable and that mean something to the client,†says Evans. The patent attorney will complete your patent application using legal jargon that will decrease your chances of being rejected. All the research you conducted earlier will come in handy as you and your patent attorney complete the patent application because you will be able to distinguish your patent from “prior art†or another invention’s claim of originality. Hourly rates for a patent attorney can be $300 and up, but they should be consistent with the American Intellectual Property Law Association fee schedule. For more information visit: The Inventors Assistance Centermore